Trade mark application number 2433531 (class 36) – SALAAM - in the name of Crescent Wealth Super Member Services Pty Ltd. - [2025] ATMO 45

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2433531 (class 36) – SALAAM - in the name of Crescent Wealth Super Member Services Pty Ltd.

Delegate:

Nicole Worth

Representation:

Applicant: Samuel Hallahan, Counsel, instructed by Corrs Chambers Westgarth.

Decision:

2025 ATMO 45

Trade Marks Act 1995 (Cth) – s 33 Registrar to accept or reject trade mark - ground for rejection under s 41(4) raised during examination – ordinary signification of trade mark - whether ordinary signification of word similar to trade mark should give rise to ground for rejection – application accepted

Background

This is a decision pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it.
[1] Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.
Crescent Wealth Super Member Services Pty Ltd (‘Applicant’) filed trade mark application number 2433531 (‘Application’) to register the trade mark detailed below.
Trade Mark: SALAAM (‘Trade Mark’)
Filing Date: 8 March 2024
Services:Class 36: Development and management of pension, retirement and superannuation plans, funds and schemes; financial lending; financing of home loans; loan financing; mortgage loans; lending on mortgage; mortgage lending; mortgage banking and brokerage; mortgage banking insurance; mortgage banking; mortgaging; mortgage brokering; advice regarding lending services; financing of investments; secured loans; mortgage advice; financial credit services; mortgage financing services; mortgage loan services; mortgage services; provision of consumer loans; provision of loans; mortgage brokerage services; mortgage insurance including home, vehicle and asset insurance; advice relating to insurance; insurance services including life insurance, accident insurance; financial administration of insurance
The Application was examined as required by s 31 and a ground for rejection was raised under s 41(4) on the following basis:
Your trade mark is SALAAM.
SALAM is a term for a contract of sale where the seller undertakes to supply goods to the buy [sic] at a future date in exchange for the price paid in advance. Your trade mark so nearly resembles this term as to likely be mistaken for it. Consumers are therefore likely to infer that your financial services are provided to facilitate SALAM transactions.
Other traders should be able to use the word SALAAM or something so nearly resembling it in connection with goods or services similar to yours.
The examiner maintained this position over the course of two further adverse reports. In support of the ground for rejection the second examination report provided a non-exhaustive list of links to three English language websites (although not Australian websites) which discuss Salam contracts. Two of them state:
Salam is used as a mode of finance in Islamic Banks to cater to the working capital needs. Salam is a contract of Sale where the Seller undertakes to supply some specific commodity to the Buyer at a future date in exchange for a price fully paid in advance. Hence, the price is paid in cash whereas delivery of the purchased Goods is deferred.[2]
Salam is a forward financing transaction, where the financial institution pays in advance for buying specified assets, which the seller will supply on a pre-agreed date. What is given in exchange for the advance payment of the price should not in itself be in the nature of money. For the payment in advance, the contracting parties stipulate a future date for the supply of goods of specified quantity and quality…Salam may be considered as a kind of debt, because the object of the Salam contract is the liability of the seller, up to the agreed future date, to deliver the object for which advanced payment of the price has already been made.[3]
[2] Accessed 19 February 2025.
[3] Accessed 19 February 2025.
The third link is not functional at the time of writing this decision.[4] The examiner’s research stored on the application file has captured the material that was at that link. It states:
[4] The non-operational link being For this reason it is preferable that the actual material of a website is provided in examination reports rather than links. This provides the recipient with a more reliable record of the basis of a decision. Links may become obsolete or the information upon the particular web page may change over time.
Salam – mode of Financing
It is evident from the foregoing discussion that salam was allowed by Shariah to fulfill the needs of farmers and traders. Therefore, it is basically a mode of financing for small farmers and traders. This mode of financing can be used by the modern banks and financial institutions, especially to finance the agricultural sector. As pointed out earlier, the price in salam may be fixed at a lower rate than the price of those commodities delivered at spot. In this way, the difference between the two prices may be a valid profit for the banks or financial institutions.
I note also that the examiner’s research contains an extract from the Macquarie Dictionary of the definition of SALAAM, being:
Salaam noun 1. (a greeting exchanged between Muslims.) 2. (chiefly among Muslims) a very low bow or obeisance, especially with the palm of the right hand placed on the forehead.–verb (i) 3. to salute someone with a salaam. 4. to perform a salaam.–verb (t) 5. to salute (someone) with a salaam.
No such definition from the Macquarie Dictionary is given for SALAM, although a Wikipedia® entry for SALAM in the examiner’s research states:
Salam (Arabic:…salām), sometimes spelled salaam, is an Arabic word that literally means “peace”, but is also used as a general greeting, above all in Arab countries and by the Muslim countries around the world in general.
The Wikipedia® entry makes no mention of salam contracts nor any definition relating to contracting or finance.
The examiner’s position is illustrated by the following extracts from the second and third examination reports:
Second report
I maintain that the word SALAM is used and can be readily understood in relation to similar services to describe their nature…
The [websites referred to in paragraphs 4 and 5 of this decision] clearly define the meaning of the word SALAM in English and there is no reason Australians would not be able to readily access these websites and understand the meaning of the word SALAM in respect of the various financial services the Applicant has claimed.
While I acknowledge these are not Australian websites, Sharia Law does not alter between countries and the meaning in one jurisdiction will be similarly understood in similar jurisdictions. Additionally, a large proportion of the Australian population are Muslim and these consumers are likely to understand the meaning of the word SALAM in respect of financial services. I am therefore satisfied that the trade mark SALAAM applied to the designated services would readily be taken as an alternate spelling of the word SALAM and consumers would understand it refers to financial services are provided to facilitate SALAM transactions [sic].
Third report
In my previous reports, I provided my reasoning and examples showing the word SALAM has the ordinary signification of a particular contract of sale under Sharia Law, and is part of the common heritage in the Australian marketplace. While the word SALAAM is also a form of greeting in some countries, this does not preclude the applicant’s trade mark from being taken to be the word SALAM, which has the above relevant ordinary signification.
Further, I do not agree that the words “SALAAM and “SALAM” are distinct from one another. The two words are highly similar in both spelling and pronunciation, and as noted above I do not agree that their meanings are mutually exclusive. I therefore consider the applicant’s trade mark SALAAM (and their 3 related trade marks) to so nearly resemble the word SALAM as likely to be taken for it. I have taken into account the difference in spelling which is why I consider the applicant’s trade mark has some limited capacity to distinguish their services from those of others, and the grounds for rejection is raised under Subsection 41(4).
The Applicant responded to the first two examination reports contending that the examiner had given insufficient regard to, and misapplied, the principles and provisions of s 41. Its position is illustrated by its response to the second examination report:
The Applicant respectfully submits that the Examiner has not considered the ordinary signification of the word “SALAAM”…and has erred by instead considering the ordinary signification of the word “SALAM” (which is not part of any of the Applicant’s trade marks).
The Applicant does not accept that the word “SALAAM” has been shown to convey a meaning or idea sufficiently tangible to anyone in Australia concerned with the services in respect of which the Applicant seeks registration (Applicant’s Services) as to be words having a direct reference to the character or quality of the services.
However, if the word “SALAAM” conveys any idea or meaning to persons in Australia, that meaning is…of a greeting or indication of homage in the form of the inclination of the body (a bow) in some countries. The Examiner responded to that submission by referring to the Bendigo and Adelaide Bank case.[5] With respect, the Examiner’s reference is inapposite because the type of contract to which the Examiner has referred in the Further Reports is not a meaning of the word “SALAAM” (rather, it is a meaning of the word “SALAM”).
The words “SALAAM and “SALAM” are distinct from one another, with completely different (and unrelated) meanings and significations. “SALAAM” is a common word in Arabic (with a meaning that has no reference to the Applicant’s services). To the extent that anyone in Australia concerned with the Applicant’s Services is aware of the word “SALAM” and its meaning, they would not misapprehend the word “SALAAM” for “SALAM” or attribute the meaning of “SALAM” to the word “SALAAM”.
Given that the word “SALAAM” does not convey a meaning or idea sufficiently tangible to anyone in Australia concerned with the Applicant’s Services as to be words having a direct reference to the character or quality of the services, there is no basis under section 41 for refusing to accept the Applicant’s trade marks for registration.
[5] The examiner had referred to a statement by their Honours that ‘establishing the ordinary signification of words is not so reductive a task as to exclude a word with more than one meaning or a potentially nuanced meaning’, Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31, [81] (Middleton, Burley and Thawley JJ).
The Applicant raised a further point that the specific services to which the ground for rejection applied were not sufficiently identified and explained. For reasons that will become clear it is not necessary to address that point in this decision.
The Applicant did not file submissions in response to the third examination report, rather it requested a hearing on the ground for rejection. I heard the matter, as a delegate of the Registrar of Trade Marks, on 18 February 2025. The Applicant was represented at the hearing by Samuel Hallahan of counsel, instructed by Odette Gourley of Corrs Chambers Westgarth, who made oral and written submissions on the Applicant’s behalf. Also on behalf of the Applicant Ms Gourley filed a statutory declaration regarding the meanings of SALAAM and SALAM and information relating to the Applicant’s services (Gourley).
I mention here that the purpose of this decision is not a review of the examiner’s decision but a fresh consideration of the ground for rejection.
Section 41
Section 41 of the Act relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Here, the relevant question is that implied in s 41(2), namely whether the Trade Mark is inherently adapted to distinguish the Applicant’s services or whether either of sub-ss (3) or (4) apply.
In Cantarella Bros Pty Limited v Modena Trading Pty Limited[6] the High Court of Australia gave guidance on the correct approach to the assessment of inherent adaptation to distinguish. It too was concerned with a word in a language other than English. The Court determined that the foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. To that end, it is the ordinary signification of the word in Australia to those who will purchase, consume or trade in the goods and/or services which is to be determined first. Then the question of whether other traders have a legitimate desire to use the word is determined, wherein only a trade mark containing a direct reference (and not an allusive or metaphorical reference) can be held to be legitimately desired for use by other traders.[7]
[6] [2014] HCA 48 (French CJ, Hayne, Crennan, Keifel and Gageler JJ).
[7] Ibid [59] and [71].
SALAAM is defined in the Macquarie Dictionary as a greeting or salutation. This is reflected both in the examiner’s research and in Gourley.[8] In addition to the Macquarie Dictionary Gourley shows that SALAAM is likewise defined in The New Shorter Oxford English Dictionary as a greeting or salutation.[9] Gourley also demonstrates that SALAM is not defined in either dictionary. The Macquarie Dictionary is usually, though not always, taken by this office to be a reflection of words in ordinary use in Australia. Other internet searches by the examiner demonstrate that SALAAM is a greeting or gesture of respect. None of the examiner’s searches of SALAAM relate to Salam contracts.
[8] See paragraph [6] of this decision and Gourley, OMG-6.
[9] Gourley, OMG-7.
The ordinary signification of SALAAM, therefore, to those who would purchase, consume or trade in the relevant services (which is notionally the entire adult population of Australia) is that of a greeting or salutation. This is so whether SALAAM is treated as an ordinary English word (as indicated by its definition in the Macquarie Dictionary) or a word in a language other than English (as indicated by the examiner’s research).
SALAM, on the other hand, whilst possessing a descriptive meaning in respect of the Applicant’s services (being a specific type of contract in Islamic finance), is not so familiar or ordinary in the English language as to be defined in any of the dictionaries used by either the examiner or the Applicant. The websites that discuss salam financing are in English, so a level of recognition may be presumed, although they are few in number. Moreover, whilst the Wikipedia® entry in the examiner’s research indicates that salam refers to a greeting (and is ‘sometimes spelled salaam’), there is no evidence that the reverse may be true (ie that salaam may be an alternative spelling of salam and refer to a mode of finance).
In this context, I am not satisfied that a descriptive meaning of SALAM is likely to displace the ordinary signification that SALAAM has amongst Australian consumers. Given that SALAM has a specialised meaning, it is likely that those who do understand it are well versed in Shariah law or Islamic finance and are therefore unlikely to take it for SALAAM. Similarly, they are unlikely to take SALAAM as a reference to the type of contract. For them the two words are entirely separate and not susceptible to confusion. For those in Australia who do not understand the descriptive meaning of SALAM, its signification is likely to be either an unknown word or an alternative spelling of SALAAM. Either way, as submitted by the Applicant, there would be no cause for the consumer to ignore the ordinary signification of SALAAM and instead treat the word as though it was SALAM. Accordingly, I am not satisfied that SALAAM so nearly resembles SALAM as to be likely to be taken for it, such that it falls within the realm of words legitimately desired for use by other traders.
On the basis of the above, I am satisfied that the ordinary signification of the Trade Mark is unrelated to the Applicant’s services and other traders are therefore unlikely to legitimately desire to use it. I am therefore satisfied that the Trade Mark is inherently adapted to distinguish the Applicant’s services from the similar services of other traders.
Decision
Section 33 provides:
Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
(2) The Registrar may accept the application subject to conditions or limitations.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
I am not satisfied that there are grounds for rejecting the application under s 41. Accordingly, I accept trade mark application 2433531 and the Applicant will receive notification of the acceptance shortly.
Nicole Worth
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
28 February 2025

Trade mark application number 2433531 (class 36) – SALAAM - in the name of Crescent Wealth Super Member Services Pty Ltd.

[2025] ATMO 45

28 February 2025